Ex parte Port-A-Cool, LLC (decision, rehearing)
Appeal 2009-001702, Reexam 90/006,567, Tech. Center 3900
Decided October 8, 2009
The claims in this patent under re-exam were directed to a housing for an evaporative cooler. The rejections on appeal included an obviousness rejection using only a single reference (Calvin). Here is a portion of the relevant claim, with the limitation at issue being emphasized:
1. A cooler housing supported on a base, having an exterior, an interior, and front and rear openings, where the base is integrally formed with the housing ...
The Examiner acknowledged that the Calvin reference did not teach a "base ... integrally formed with the housing." The Examiner used the "obvious design choice" to close this gap, citing to In re Larson for the proposition that "merely making integral parts that are separate involves only routine engineering design."
The Applicant argued that In re Larson does not stand for a per se rule. The Examiner acknowledged this, and restated the rejection as an obvious design choice "absent any teaching of criticality or unexpected results by the Applicants."
In the Reply Brief, the Applicant argued that the declaration evidence from the inventors (submitted before appeal) rebutted a prima facie case of obviousness:
The Declarations establish the problems encountered in the art, the prior art solution to the problems and the time duration in which the invention was made in light of one skilled in the art, including the educational, technical and industrial experience of the declarant. Such factors are indicative that the claimed invention is not obvious to those of skill in the art.
On appeal, the Board applied one of the rationales from KSR to affirm the obviousness rejection. Even considering the declaration evidence as to why the modification would not be obvious, the Board found:
There is no persuasive evidence that making the support frame integral with the housing would have been beyond the skill of one of ordinary skill in the art. [KSR v. Teleflex, 550 US 398, 417.] In this regard, the claimed invention "merely applies the well known technique of making various structural features integral to yield predictable results." Id.After the appeal decision, the Applicant asked for a rehearing. In the Request for Rehearing, the Applicant argued that the declaration "presented details of the development of the invention" which "required extensive efforts by one of ordinary skill the art, and was not a 'predictable variation'." The Applicant argued that the Board's statements referring to "no persuasive evidence" and "merely applies the well known technique" were contrary to the declaration evidence.
In its Decision on Request for Rehearing, the Board explained that the declarations were unpersuasive because they did not present details to explain why integrally forming the base with the housing would be beyond the skill of a POSITA. The Applicant's rebuttal to the prima facie case was an assertion of technical challenges beyond the skill of a POSITA, but the evidence did not support that assertion.
... Contrary to the Appellant's assertion, in our view, the Declaration does not present "details" that persuade us that integrally forming the base with the housing would have entailed skills beyond those of one of ordinary skill. The Declaration states that integrally forming the base with the housing was "troublesome since it required the combination of two separate functional components into one while incorporating all of the stability characteristics of the caddy base and the operational features of the housing and which further addressed the bottom surface weakness of the rotomolded caddy base." (Decl. ¶ 11). However, such a general statement is not much more than simple articulation of the functional objectives for developing the claimed invention, and does not provide details as to the technical difficulties and skills required for attaining such objectives.My two cents: Arguing that the combination of references doesn't teach one of the limitations is almost always a better choice than arguing that the combination isn't obvious. But if you're stuck with arguing obviousness itself, this decision provides an excellent explanation of what it takes to overcome obviousness at the BPAI. Although this decision involves declaration evidence, the same principles apply to attorney argument. In short, you're unlikely to overcome an obviousness rejection by arguing "No, it's not just a predictable variation" or "No, it's not a simple substitution." You need to explain why that's so, in as much detail as possible.
The Declaration also specifies that a void that is above the caster mounting surface caused the casters to collapse (Decl. ¶ 11), but it does not provide persuasive evidence or articulate technical reasons as to why redesigning of that area was technically difficult or would have been beyond the skills of a person skilled in the art. In this regard, while the declarant, Mr. Calvert, may be skilled in the relevant field of coolers and in manufacturing of coolers, the Appelllant has not persuasively shown that the level of ordinary skill in the art is such that arriving at the claimed invention, which includes an integrally formed support base and housing, would have involved skills beyond those of one of ordinary skill.
While the Declaration further states that "molds had to be continually re-designed in order to address the issue of stability[,]" (Decl. ¶ 11), with the exception of the above noted "void" issue, no further details are provided with respect what other technical issues or unforeseeable problems were addressed during by each redesign and how many redesigns were required. Furthermore, while the general assertion is made that "a great deal of time and resources were expended to solve these issues[,]" (Decl. ¶ 12), no details are provided with respect to the amount of time and resources expended.
The Appellant's argument for non-obviousness is based on the assertion that there were technical challenges to the claimed invention that were beyond the skill set of one of ordinary skill in the art, the solution for which was inventive and took substantial time and resources to develop. However, the evidence does not reflect these challenges and the alleged inventive contribution.
This decision also shows that this requirement for a real explanation is still present when you submit declaration evidence. You're unlikely to overcome an obviousness rejection with "No, it's not just a predictable variation" or "No, it's not a simple substitution." even when your expert/inventor makes this as a sworn statement.
Neither the Applicant nor the Examiner discussed KSR, which was relatively new law when this application went to appeal.